Does your business rely on innovation to stay ahead of its competitors? Do you understand how IP can help to protect your business against copying and add a tangible value to your company? BUT only if you know it’s here, which elements of your value proposition it is protecting, and to properly preserve it.
Even during the early stages of concept development, it is wise to have a clear idea of your IP strategy, so that you don’t fall into the common IP traps we see so often. Here are Five Common IP mistakes…And How To Avoid Them.
1. DON’T FILE A PATENT APPLICATION TOO SOON!
When you come up with a new concept, it is natural to want to “plant your flag” as early as possible and file a patent application to secure some provisional protection against copying. BUT this can be a mistake because:
a) the features of the product or process, once developed, might be quite different to those you thought it might have and the specification you filed early on may not cover the new version properly. This means that the patent application would have to be rewritten and re-filed, which effectively doubles the expense. Also, you only have 12 months from filing your first patent application to re-file it if you want to ‘keep’ the original filing date. As you may know, a year is not a long time in the field of concept development, so you may not even be ready, at that stage, to fully “top up” the patent specification to cover the final version of the innovation.
b) you also only have 12 months from filing the first patent application to file overseas patent applications. If the concept is still some way off commercialisation at that point, you end up having to make rather difficult and expensive decisions about which countries you need to cover without having tested the markets.
Therefore, we often recommend waiting to file a patent application for as long during the development phases as you safely can without disclosing the innovation to anyone except under a confidentiality agreement or “NDA”. Some templates for NDAs can be found here Non-disclosure agreements – GOV.UK (www.gov.uk)
2. DON’T DISCLOSE YOUR INNOVATION TO ANYONE EXCEPT IN THE STRICTEST OF CONFIDENCE until you absolutely have to, and definitely not until a patent application (or registered design application has been filed.
For a patent to be valid, it must be novel over everything that has been published (or made known to the public) before the filing date, so if you have disclosed the invention before filing, the any patent filed after that would be invalid.
For registered designs, things are a little more complicated. Although some territories, including the UK, EU and US allow a 12-month “grace period” within which you can validly file a registered design application after you have disclosed the design, other countries do not.
So, to keep your options open with regard to overseas protection, keep the innovation confidential (using NDAs where needed) until your patent application and/or your registered design application has been filed in the UK.
3. DON’T FILE A TRADE MARK APPLICATION TOO SOON
Again, when you come up with a great name for a new product, it is tempting to immediately register the trade mark. However, there are pitfalls to avoid. Firstly, for a trade mark to be valid, there must be an intention to use it within subsequent five years. In technologies where development time can take quite a bit longer than this, if a trade mark has been filed too soon, it can be open to challenge after five years on the basis that there has been no commercial use of it.
Ideally, the application for trade mark registration should fairly close to the point that you plan to commercialise; BUT make sure that you at least have a trade mark search performed before any commercial use of the trade mark is made, and before you have committed your branding and packaging to a particular trade mark, just in case there are third party issues and you need to change the trade mark to avoid infringing someone else’s rights.
4. DON’T REGISTER YOUR TRADE MARK IN THE WRONG NAME
A trade mark is only valid if its commercial use is by its owner. If you have registered a trade mark in your own name, say, but your company is the entity that is making commercial use of it, then it could, once again, be open to challenge. If you have already registered a trade mark in your own name, it is important to assign (‘sell’) or formally licence the use of the trade mark to the company in order to safeguard its validity. IF NOT, we recommend that when you do file your application for trade mark registration, you file the application in the name of the entity that will be commercialising it.
All of that said, there is a lot more to trade mark registration that meets the eye, and we strongly recommend that you consult a qualified trade mark attorney before you file any application for trade mark registration. We can put you in touch with a reputable trade mark attorney, just contact us via the email address below.
5. DON’T JUST RELY ON KNOW HOW AND TRADE SECRETS to protect your business without putting proper protection for those (often) extremely valuable assets. It is not enough to simply say something is a trade secret – it must be shown to be treated as such if you want to be able to challenge a third party for unauthorised us.
The elements of the value proposition that are, in fact, trade secrets must be properly captured, ring fenced and then given an ‘extra’ layer of protection within your business. For example, they should only be disclosed to anyone, inside or outside the business, on a ‘need to know’ basis, and then, preferably under separate NDA referring specifically to that information. Employment contracts need to ensure that a disgruntled employee cannot just walk out and take your trade secrets with them.
Finally, your cyber security, where necessary, should be tight – apparently, over €60 billion is lost each year to businesses in the EU through unauthorised misuse of trade secrets obtained through cyber theft (source: https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/observatory/documents/reports/2019_Status_Report_on_IPR_infringement/2019_Status_Report_on_IPR_infringement_pr_ireland.pdf).
